Copyright Outline



Zimmerman Copyright Outline

The Concept of Copyright

I. History and Overview

a. Two theories of copyright that are often in tension:

i. Copyright as a legal monopoly

1. Source of copyright is the government so what the govt gives, the govt can take away

2. Why give a monopoly right?

a. Create incentives – subsidize activities that we want to encourage

b. Value judgment that this work has intrinsic value

c. Public goods problem – create artificial scarcity b/c once a work is out there it is accessible to all

3. This is an economic, public benefits argument

4. Under this theory you only give the copyright owner just enough rights to create the work, anything else is taking away from public

ii. Copyright as a natural/property right – form of property

1. Fundamental liberty and right to your work

2. This is more inward looking – protecting the rights of individuals not creating incentives to benefit public

3. Includes moral rights – control over work after creation

b. US theory is generally more public benefits oriented – striking the correct balance between pubic access and personal incentives

c. Brief history:

i. Copyright came into existence b/c of printing press

ii. British Crown originally gave exclusive license to London Stationer’s Guild so all printing was done through them.

iii. Statute of Ann in 1710

1. Created 2 term copyright, 14 years then renew if alive.

2. Kicked at publication

3. Parliament declares the purpose of copyright is to protect authors and not publishers.

4. At the end of the term, the work entered public domain

iv. US copyright structure was based on this model (2 term copyright) until 1978

v. Three sets of copyright law that are still used in US:

1. 1909 Act

2. 1976 Act

3. Post-Berne Amendments

vi. Copyright’s authority comes from the Constitution

vii. Constitution Article I, Section 8, Clause 8:

viii. Congress shall have power…to promote the progress of science and the useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.”

ix. Framers wanted to create a uniform copyright system – thought it would be bad for all 13 colonies to have separate laws.

d. Burrow-Giles Lithographic Co. v. Sarony (1884, p.29)

i. Sarony took photography of Oscar Wilde and Burrow-Giles made a lithograph of it. Sarony claimed this violated copyright but the question became whether a photograph was copyrightable.

ii. Two main issues:

1. Are photographs copyrightable?

a. The Constitution doesn’t specifically say what works will be covered.

b. There is something more mechanical about photography that made some people think it couldn’t be copyrighted.

c. Court defines writing broadly as any product by which the ideas in the mind of the author are given visible expression.

2. What does it mean to be an author?

a. Two things to focus on:

i. Contributions that Sarony makes to the work, i.e. lighting, costumes, background, etc.

ii. Original work in the sense that it originated w/ Sarony (not necessarily in the sense of being original or new)

iii. Court decides photograph was an original work of authorship and copyrightable.

e. Bleistein v. Donaldson Lithographing Co. (1903, p.34)

i. Issue of copying circus posters. Could that be covered by copyright?

ii. Three arguments were made against copyrighting these posters:

1. Circus poster depict real things. They are not products of imagination

a. But maps and charts were copyrightable…

2. Insufficiently original b/c not of high enough skill

3. Subject matter is not sufficiently elevated – both subject matter of circus and the fact that it is just an advertisement

iii. Holmes reads the Copyright statute as covering more than just fine art

iv. Also says that judges cannot/should not judge artistic worth.

v. Basically originality requires very little – only that the work originate w/ the author.

vi. Purpose of the work doesn’t matter and standards for eligibility are low

f. Good summary and overview at p.38-49

II. Copyright Compared with Other Forms of IP

a. Copyright vs. Patents/Trademark

i. Copyright is only one from of IP protection

1. Patents

2. Trademarks

3. Unfair trade practices

4. State rights of publicity, misappropriation, etc.

ii. The copyright/patent distinction is interesting b/c there is nothing in the Constitution that says they should be treated differently.

iii. Patents are difficult to get. Stringent standard for eligibility:

1. Must be useful

2. Innovative (novel)

3. Non-obvious

4. Only 1 will be issued per invention – must be first to create.

iv. Copyrights are fairly easy to get.

b. Alfred Bell & Co. v. Catalda Fine Arts (1951, p.52)

i. Question about whether a lithographer can copyright a lithograph (basically exact copy) of a master’s work (that is already in public domain). Mezzotint method.

ii. No real novelty is required – you just cannot copy a copyrighted work.

iii. Another person could make a copy of the master’s original work and not infringe the lithographer’s copyright.

iv. Theoretically, if two people independently created the same work, they would both get copyright.

v. The only element that gets copyrighted is the distinguishable variation.

vi. “All that is needed…is that the author contributed something more than a merely trivial variation, something recognizably his own.”

vii. Judge Frank decides the lithograph can be copyrighted, but only to the extent of its variation on the original. Even if variation just comes from something as trivial as sneezing while copying.

viii. This standard is diametrically opposed to patent.

c. Trade-Mark Cases (1879, p.56)

i. Background:

1. Trademarks are a way of identifying the source of goods. They facilitate commerce by giving consumers expectation to quality.

2. Trademarks have no originality requirement and they can last indefinitely.

3. Controlled mostly by the Lantham Act which is just a lot of unfair trade practices law.

4. §43(a) of Lantham Act can also attach to copyright – offers remedies for misrepresentation of products

5. Trademark was entirely a matter of state law until this case.

ii. SC throws out Trademark statute saying that the Constitution only applies to copyrights and patents and this was beyond Congress’s power b/c it wasn’t limited to interstate transactions.

d. Dastar Corp. v. Twentieth Century Fox Film (2003, Supp. p.1)

i. Fox sued Dastar for releasing set of videos substantially copied from their own series that had fallen into public domain. Sued under Lantham Act §43(a) for reverse passing off since Dastar used its name instead of Fox’s.

ii. Trademark and copyright are intertwined. Ex: Disney claimed that even after copyright on Mickey Mouse expired, it was still trademarked.

iii. Here however the Court ruled for Dastar.

iv. Dastar was the producer of the specific work and under trademark, that is what is necessary to see.

v. Origin in Lantham Act does not mean original creator but source of particular copies.

vi. Court says once something is in public domain, that is it. You cannot extend copyright even for a trademark use. (So Disney can’t claim trademark for Mickey)

vii. After this case, copyright and trademark are completely separate categories

e. Ownership of copy vs. ownership of copyright

i. Prior to 1976, copyright did not attach until the work was published.

However, state common law copyright protected unpublished works indefinitely.

ii. Under state common law copyright, if you sold or transferred ownership over an unpublished work, the presumption was that the copyright traveled w/ the work.

iii. But for published, copyrighted works, this was not the case.

iv. Copyright does not travel w/ the physical copy of the work.

v. §202 – Ownership of Copyright as Distinct From Ownership of Material Object

1. copyright is distinct from the material object in which the work is embodied

2. transfer of ownership over the material object does not in and of itself convey any rights of copyright

vi. §109 – Limitations on Exclusive Rights

1. The owner of a particular copy may sell or otherwise dispose of the possession w/o authorization from copyright owner.

f. Forward v. Thorogood (1993, p.70)

i. Forward had unpublished/unreleased tape of Band’s recording. He was given the tape as a gift b/c he was a supporter. He wants to release it and the Band is trying to prevent that from happening.

ii. Judge says Forward does not own the copyright, even thought it was unpublished so copyright might have gone w/ copy.

iii. Found that even under common law copyright, there had to be intent to transfer the copyright. No intent here.

iv. Also the 1976 Act changed the law and works are presumed copyrighted when they are created, not when they are published.

Copyrightable Subject Matter

I. Basic Concepts

a. What kind of works may be copyrighted?

b. The first Copyright Act only covered books, maps and charts.

c. Today many more types of works can be copyrighted.

d. §102 of the 1976 Act gives a list of what copyright may include (this list is illustrative and not exhaustive):

i. §102(a) non-exhaustive list of what may be copyrighted:

1. literary works

2. musical works, including accompanying words

3. dramatic works, including accompanying music

4. pantomimes and choreographic works

5. pictorial, graphic and sculptural works

6. motion pictures and other audiovisual works

7. sound recordings

8. architectural works

ii. §102(b) list of what may not be copyrighted:

1. idea, procedure, process, system, method of operation, concept, principle, discovery, etc.

2. This is the idea/expression dichotomy – you can copy ideas, just not expression

e. Under §102(a) works must be original and fixed in tangible form. Neither term is defined in the statute.

f. Originality

i. Feist Publications v. Rural Telephone Service (p.75)

1. Independently created by the author AND

2. Some minimal level of creativity

ii. Magic Marketing v. Mailing Services of Pittsburgh (1986, p.76)

1. P designed envelopes w/ messages like “urgent, open immediately,” or “telegram.” The printer makes more than P ordered and sells the extra himself.

2. Court holds no copyright for envelopes b/c the phrases were entirely functional and did not exhibit minimal level of creativity

3. Author must make contribution that is not trivial

4. Fragmentary words and phrases or forms of expression dictated solely by functional considerations are not creative enough.

iii. Tin Pan Apple Inc. v. Miller Brewing (p.76) – Court gives copyright to rap syllables repeated rhythmically.

iv. Sebastian Int’l v. Consumer Contact (p.79) – Court gives copyright to label on shampoo bottle.

v. These cases seem at odds w/ one another.

vi. What is minimal level of creativity? No bright line rule.

g. Fixation

i. Must be fixed in form so that it can be perceived either directly or by use of a machine or device.

ii. Usually not a difficult requirement – written down, then fixed.

iii. Problems arise w/ new tech like video games and computers

iv. A copy can be fixed even if it is in a computer’s RAM for a few seconds

v. Videogames are fixed even though images change w/ play and individual players

vi. Televising a live event is not fixation unless you simultaneously make a recording of it.

vii. Big controversy when US signed onto TRIPs – Agreement on Trade Related Aspects of IP

1. Created a new Chapter 11 - §1101

2. Deals w/ anti-piracy – the unauthorized fixation and trafficking in sound recordings and music videos

3. Grants performers rights against unauthorized recordings of their performances AND against any one who sells a copy of the unauthorized fixation.

4. Created a new “right to fix” so you are now an infringer if you record a live performance w/o permission from copyright owner

viii. U.S. v. Martignon and KISS Catalog v. Passport Int’l Products (supp. p. 5) both recently challenged TRIPs

1. Anti-bootlegging statute (TRIPs) is unconstitutional.

2. Court found the new Chapter 11 to be outside authority from Copyright Clause and Commerce Clause but did not reach whether Congress had authority to do this under treaty power.

3. However, state common law copyright continues to protect unfixed works.

ix. There is no public policy reason behind fixation requirement. Some have argued that we should remove the distinction since state copyright obviously survives w/o it.

II. Expression vs. Facts/Ideas

a. Baker v. Selden

i. Selden writes book about new accounting system and includes forms which are part of the system. Baker produces another book w/ similar ledger forms. Selden sues Baker for infringement.

ii. When an object is intended to be useful, we have to be careful of the line between copyright and patent.

iii. Copyright cannot protect systems or ideas. Utilitarian things are protected by patent.

iv. Court finds that Baker did not infringe. Three possible arguments why:

1. Merger doctrine – so work is not copyrightable

a. In order to use system you must use ledger forms

b. So the expression mergers with the idea

2. Merger doctrine - so copyrightable but not infringed

a. Jury must decide if D could have expressed the idea in another way – i.e. was there really merger?

b. Question of fact for jury

3. Not copyrightable b/c it is utilitarian

a. Copyright Office says you can’t copyright blank forms.

b. Blank forms are intended to be useful, not communicative

v. These are the three arguments behind the idea/expression dichotomy.

b. Morrissey v. Proctor & Gamble Co. (p.95)

i. Morrissey copyrighted set of rules to sweepstakes game and claims that Procter copied Rule 1.

ii. Court held no copyright for the subject matter.

iii. Merger – uncopyrightable b/c can only be expressed one way.

c. Continental Casualty Co. v. Beardsley (p.96)

i. D developed new kind of insurance and published pamphlet explaining the policy and including forms. P copied the forms.

ii. Court held forms were copyrightable b/c they “explained” the plan.

iii. But gave very “thin” copyright only against exact duplication.

d. Lotus Development Corp. v. Borland International (p.98)

i. Quattro copied Lotus 1-2-3’s command prompts and menu tree. Quattro wanted Lotus users to be able to use their program w/o learning a new system. Lotus had become the spreadsheet standard (like QWERTY for keyboards).

ii. Lower court treated this as classic case of infringement, held that Quattro could have used slightly different words for command prompts (Like Quit instead of Exit or Mimic instead of Copy)

iii. Circuit court reverses holding command prompts are a method of operation so not copyrightable.

iv. These are actual words (unlike forms in Baker) but they are being used in a purely functional manner.

v. Court decided it was a method of operation prior to deciding if there was merger. Said that copyrightable expression could not be in a method of operation anyway.

vi. Concurrence: addressed the problem of consumer investment in a standard, thinks that is really why it should not be given copyright.

vii. This is a radical opinion and has far reaching implications for computer programs

e. American Dental Ass’n v. Delta Dental Plans (p.109)

i. ADA produces codes for dental procedures and Delta copied the codes and short descriptions.

ii. Real issue – by standardizing the terminology and attaching codes, it makes it possible for people to quickly fill out forms. So this is utilitarian but also contains a lot of expressive elements.

iii. Ct of appeals said this was copyrightable. Contained the minimum creativity and the organization and classification is a creative endeavor. There are other ways to classify the procedures.

iv. But held that Delta could distribute the system to its dentists and encourage them to use the codes but could not copy the codes itself or make derivative works (?)

f. Bibbero Systems v. Colwell Systems (p.110)

i. Issue of medical forms like in ADA.

ii. Court held the blank forms not copyrightable.

III. Compilations and Fact Works

a. Basics:

i. §101 – A compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.

ii. §103 – protection for compilations only extends to the original elements – the selection, arrangement, etc. and does not affect copyright in underlying work.

b. Both creative and factual compilations are copyrightable to the extent of the selection and arrangement.

c. Policy arguments for and against giving copyright to compilations:

i. Can claim there has been no “progress” of useful arts.

ii. Also don’t want to give perpetual copyrights

iii. But these works are labor intensive so we want to give incentives for them to be created. Economic argument

iv. This gave rise to “sweat of the brow” cases where content was not protected but authors got copyright b/c of time spent putting it together

v. Feist rejects this “sweat of the brow” argument

d. Feist Publications v. Rural Telephone Service (1991, p.117)

i. Rural claimed copyright in their telephone books. Feist asked for permission to make a derivative work but Rural denied. So Feist did it anyway and combined info from Rural into a bigger directory and resorted the information by region.

ii. Courts had traditionally protected telephone books based on sweat of the brow theories (basically giving copyright protection to underlying info)

iii. SC reverses the lower courts and holds NO infringement.

1. Copyright does not protect labor (sweat of the brow) and it does not protect facts. It is both a constitutional and statutory violation to give copyright to underlying facts and labor.

a. Originality is a constitutional requirement

b. Facts do not originate w/ individuals, they just exist

c. However – the question of what constitutes a fact is complicated. The court said all facts – scientific, historical, biographical and news of the day – are not copyrightable.

d. But this is really not that clear. What about conclusions that scientists draw from facts?

2. The selection, ordering, and arrangement of information is copyrightable.

a. However, Rural did not get protection for its arrangement b/c it was only alphabetical and therefore lacked sufficient creativity.

b. There must be some minimal level of creativity.

iv. B/c Rural’s white pages lacked requisite originality, Feist’s use did not constitute infringement.

e. Nash v. CBS (p.129)

i. Nash wrote semi-biographical book about John Dillinger arguing that he did not die in FBI shootout. CBS made a TV mini series based on this theory. Nash did not portray his work as fiction but non-fiction.

ii. Court found this to be fatal – if Dillinger survived, the fact is available to all. So Nash’s copyright is in the particular form of expression and CBS can use the underlying facts to make a different expression.

iii. Based this partly on Hoehing v. Universal City Studios which said that “explanatory hypotheses” or speculative reconstructions of unknowable occurrences are as much in the public domain as facts are. Also held that “scenes a faire” or literary stock devices are not copyrightable.

iv. This is an example of how courts treated fact works that were not compilations prior to Feist.

v. You would not get protection, even for “sweat of the brow’ in fact works like biographies, histories, etc.

vi. Feist has now put compilations and fact works on the same footing.

f. Post-Feist cases:

g. Roth Greeting Cards v. United Greeting Cards (p.136)

i. Roth created greeting cards w/ picture on front and simple phrase inside. Roth couldn’t claim copyright in the phrases themselves b/c they were so simple so they claimed compilation copyright based on pairing the phrases w/ the images.

ii. Divided court of appeals agreed w/ this argument and held infringement of the of the compilation b/c Ds cards had the same “concept and feel.”

iii. Another factor that contributed was that this was a creative work and not a fact work. However, this case is problematic b/c the level of creativity is quite low and the Ds didn’t make exact copies.

iv. Fact works have thin copyrights but once you get a copyright in a creative work, it is “thicker” so even similar things are infringement.

h. Atari Games Corp. v. Oman (p.138)

i. Court goes against Register of Copyright and gives protection to Atari game even though it was just sequence of simple shapes.

ii. Found that there could be originality in the sequence and flow of images, not necessarily in each individual screen.

i. Matthew Bender v. West Pub. Co. (p.141-144)

i. Federal judicial opinions, statutes and regulations are all in the public domain (the govt has given up its copyright). Most states have as well. West became the standard reporter for all federal and most state materials and created a system of sorting into different topics. At first, West didn’t want to create an electronic system so it let Lexis go ahead. Then it realized the value and sued Lexis for infringement.

ii. West really only claimed copyright in the star pagination system and that you could theoretically duplicate an entire reporter, in order, by printing.

iii. 2nd cir holds for West on the star pagination – copyrightable.

iv. Then Lexis wants to make CD-ROM sets. But this is now after Feist.

v. 2nd cir now holds that there is nothing copyrightable on the CDs.

j. CCC Information Services v. Maclean Hunter Market Reports (p.145)

i. Maclean published the Red Book which contained average valuations for used cars. State insurance standards also used this valuation. CCC complied a computer database using Red Book standard, another company’s Blue Book standard and an average of them.

ii. Court actually held that these were not facts but predictions and copyrightable expression.

iii. The valuation brought together opinions, judgment, conclusions, etc., and that was expression.

iv. This is very debatable, especially when compared to Nash.

v. Could argue that there had actually been merger here – that the value was just a hypothesis/idea and that the only way to express it was in this #.

vi. Sometimes it is very difficult to separate out idea from expression.

k. Southco v. Kanebridge and ATC Distrib. v. Whatever it Takes (Supp p.9-10)

i. Both cases deal w/ systems for numbering of industrial parts.

ii. Court finds non-copyrightable system in both cases.

iii. No creative aspect and more like ideas (merger)

l. Assessment Tech v. WIREdata Inc (Supp p.12)

i. AT used real estate tax assessors to go and collect information on properties and then put into a computer program in different categories. Claimed a copyright based on the decision to categorize and sort the data.

ii. Poser holds no copyright. Thinks it is ridiculous and that AT is merely trying to use its copyright to sequester uncopyrightable data.

iii. Facts belong to the public and you cannot use copyright in a database to prevent access to those facts.

iv. There has since been a lot of debate over whether we should give copyrights to databases. EU countries do and many bills have been proposed to Congress on this topic but never passed.

v. This is really a policy consideration.

vi. 1st amend law says that things in the public domain must remain there.

m. BellSouth Advertising v. Donnelley Information Publishing (p.153)

i. Bell created yellow pages. No question that yellow pages are copyrightable b/c involve a lot more creativity than white pages in terms of selection, arrangement, etc. D made exact copy of yellow pages into a computer and then created own yellow pages that were very similar.

ii. Two real issues:

1. Intermediate copying problem

2. Did D copy the elements that made Bell’s directory copyrightable?

iii. Court held that Bell’s arrangement was actually quite typical it merged and also headings typical so D did not appropriate any original elements in using the headings.

iv. Concluded that it wasn’t copyrightable.

v. Dissent thinks there was something unique about selection.

vi. Really a problem of functionality – how many different ways can you list something in a phone book?

n. Mason v. Montgomery Data (p.160) – maps case

i. Map cases have been the least influenced by Feist b/c maps have been included under copyright since the very first Act.

ii. Old maps had a lot of variations b/c there was debate about how to measure space and a lot of judgment went into it. This isn’t the case anymore though.

iii. Court holds that while maps might not be creative and even though they are based on fact, they are expressive. Represent one vision of reality.

iv. No merger b/c the idea can be expressed in more than one way.

v. Mason’s maps possessed sufficient creativity in the selection, coordination and arrangement of facts.

vi. Also kind of seems like court is just protecting the labor that went into the map – a little bit like sweat of the brow.

IV. Derivative Works

a. Also governed §103 – when you make a derivative work, you only get a copyright in what you have added, not the underlying copyrighted or public domain work.

b. You get a copyright in the expression you have added.

c. The underlying work must either be in the public domain or you must get permission from the copyright owner.

d. L. Baitlin & Son v. Snyder (p.165) – Uncle Sam bank case

i. Bank design was originally in cast iron and covered by patent. Then went into public domain. Snyder created a plastic version of the bank with some slight alterations and copyrighted his design. Baitlin then also tried to do the same but there was issue of whether it violated Snyder’s copyright.

ii. In Alfred Bell, Judge Frank has clear view of what derivative work should be to claim copyright:

1. Distinguishable variation

2. Non-trivial addition

iii. There were a number of distinguishable variations in the bank but the majority does not think it is enough. NO copyright.

iv. Standard is substantial variation from the original for more mechanical reproductions.

v. But not overtly overruling Bell b/c discuss Rodin “Hand of G-d” case (Alva Studios v. Winninger) where even though it was an exact replica, it took so much skill and labor that it got a copyright. Also b/c it was a copy of something more unique.

e. Eden Toys v. Florelee Undergarment (p.171) – Paddington Bear case

i. The first derivative work was authorized. So when someone else made another derivative work, even though the changes in the first one from the underlying picture were not a lot, the owner of the first derivative work still had a claim against the second.

f. Gracen v. Bradford Exch. (p.172) – Wizard of Oz plates

i. Posner says standard for variation in derivative works should be high enough to prevent overlapping claims.

ii. Assure a sufficiently gross difference between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems.

iii. This case really highlights the consequences of granting copyright to derivative works that contribute only a nontrivial variation.

g. Two main concerns underlying derivative works:

i. Public rights – don’t want to give copyright to derivative works based on public domain if they are so similar that it would effectively take something out of the public domain.

ii. You also don’t want to prevent the underlying copyright owner from licensing derivative works for fear that someone who had already been licensed would have a claim against the new person.

V. Computer Programs

a. Computer programs have created an ongoing problem for copyright.

b. It is clear that in the 1976 Act, Congress intended to incorporate new technologies that needed assistance of device or machine to be perceived. But computer programs are not always perceived at all.

c. Apple Computer v. Franklin Computer (1983, p.185)

i. Difference between source code and object code. Source code are the instructions but they must be translated into object code for the computer to be able to read them. They are both representations of the same program and the copyright is actually in the program, not the representation.

ii. Franklin wanted to design computers that were Apple compatible, that could run Apple programs. But Apple would only give its object code to specific software designers who designed solely for Apple. Franklin copied

iii. Court holds that a computer program, whether in object code or source code is a literary work and is protected from unauthorized copying.

iv. Also no difference between operating systems and application programs. But the court never gives a good reason why – says only that Apple is not copyrighting method of operating system, only the instructions for those systems (the object code and the source code). In terms of merger, we never get an answer.

d. CONTU came up w/ §117 of Copyright Act – Limitations on Exclusive Rights: Computer Programs.

e. Computer programs are faced w/ an acute version of the public goods problem since it is especially easy to make copies of them.

f. There has never been a definitive SC case dealing w/ computer software.

g. §117 reflects receptivity to new tech and desire to encourage continued imagination and creativity in computer programming through copyright laws.

VI. Pictorial, Graphic, & Sculptural Works

a. Under 1909 Act you could not have a copyright in a utilitarian work, even if it had a decorative aspect. The line between utilitarian works and communicative works was very rigid. This changed in Mazer v. Stein.

b. Mazer v. Stein (1954, p.197)

i. Sculptural lamp. Work of art had been incorporated into a useful article.

ii. Court found that the design was copyrightable.

iii. A work does not lose copyright by being embodied in a useful article.

c. §101 definitions of pictorial, graphic and sculptural works:

i. such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.

ii. The design of a useful article can only be considered pictorial, graphic or sculptural to the extent that such design incorporates features that can be identified separately from and are capable of existing interpedently of, the utilitarian aspects of the article.

d. How do you decide if something is useful as well as pictorial, etc.?

i. This has come up mostly for costumes since they are both utilitarian and pictorial.

ii. Copyright Office has taken position that costumes are just clothes – but masks can be copyrightable.

iii. Masquerade Novelty Inc. v. Unique Industries (p.202) – masks have no utility that does not derive from their appearance. So they can be copyrightable.

iv. Celebration Int’l v. Chosun Int’l (Supp p.18) – body of a tiger costume not separable from its useful function as clothing but head (mask) was separable and copyrightable. However, protection afforded to things that look like “real” things we all know is very limited.

e. Issues of separability:

f. Kieselstein-Cord v. Accessories by Pearl – Belt buckle case

i. Belt buckles that were also very sculptural

ii. Focused on conceptual separability

iii. If you can look at an object and conceptualize it as decorative or artistic, independent of its utilitarian function, then it is copyrightable.

iv. Dissent: must be physical as well as conceptual separability.

g. Carol Barnhart v. Economy Cover Corp. – human torso mannequins

i. Court holds no copyright b/c totally utilitarian even though we can see it as a sculpture.

ii. But Zimm thinks this is probably b/c it was just cheap Styrofoam.

h. Brandir Int’l v. Cascade Pacific Lumber – sculptural bike rack

i. Uses a functionality test

ii. What is the primary driving force of the design? Utilitarian considerations or artistic expression?

i. Pivot Point International v. Charlene Products (Supp p.18) – mannequin heads

i. Mannequin heads were used for utilitarian purpose of teaching hairstyling and makeup application.

ii. Goes through the three above cases from the 2nd cir on separability tests.

iii. Eventually holds that the mannequins are copyrightable but they are very divided about it.

iv. Test is that you must be able to show artistic choices that are independent from functional concerns.

v. Real problem here is that the heads can either be useful objects or serve no function at all, depending on what the user does w/ them.

j. Basically US law only gives full copyright protection to 3 useful articles:

i. Architectural works

ii. Vessel hulls

iii. Computer mask works

VII. Architectural Works

a. Berne Convention requires protection for architectural works.

b. Prior to this, architectural works were only protected to a limited degree – only the plans and drawings of the buildings got protection.

c. Demetriades v. Kaufman (1988, p.227)

i. P’s built unique expensive house and D tried to build same house across the street. D had gotten copies of the plans.

ii. Court enjoins D from using the plans – had to give them back. But Ds were free to look at house and try to copy it that way.

d. Now, after Berne, we protect buildings created after 1990 under §102(8) and §120.

e. Functional aspects and individual standard features of buildings are not included (§101) but you can make 2 dimensional copies (like pictures)(§120).

f. Richmond Home Case (p.231)

i. Similar dimensions, similar locations of rooms and closets, etc.

ii. Violated copyright

iii. Statute grants thick copyright to architectural works.

g. There has not been a lot of litigation in this area though b/c architects realize that architecture is highly synthetic and there is always lots of borrowing. That is how the how area develops.

VIII. Characters

a. Are characters ideas or expressions?

b. This is particularly hard w/ proliferation of things like spin-off shows or movies from secondary characters – are they copyrightable?

c. Policy problems:

i. Copyrights in creative works are very broad (thick) so if we give copyright to characters, you make it difficult for other people to use even similar, if not identical characters.

ii. Chilling effect

iii. Often characters are meaningful b/c they are more universal – many people can relate to them.

d. Nichols v. Universal Pictures Corp. (p.233)

i. The less developed the characters, the less they are copyrightable.

ii. This is the Learned Hand specificity test.

e. Warner Bros v. CBS (p.234)

i. WB had right to use Maltese Falcon story and then Hammett gave CBS right to use Sam Spade character in different stories. WB sued.

ii. Court said that grant to WB was just for Maltese Falcon story and was not for the Sam Spade character.

iii. “It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by copyright…The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.”

f. Anderson v. Stallone (1989, p.235)

i. P creates screenplay for Rocky IV but it gets rejected. Then MGM comes out w/ Rocky IV and it has really similar plot. P sues. Stallone counters that P was circulating a screenplay that violated his character copyright.

ii. Holds that P couldn’t use Rocky character b/c it was copyrighted.

iii. Characters must be clearly marked and delineated.

g. Courts have been more willing to grant copyrights for cartoon characters. And it is not just the visual depiction that is copyrighted, it is the character.

i. Detective Comics v. Bruns Publication (p.244)

1. P owned copyright in “Action Comics” which portrayed Superman. D published and distributed a “Wonderman” comic.

2. Court held that Wonderman infringed Superman character. Character is too like Superman.

ii. DeCarlo v. Archie Comic Publications

iii. King Features Syndicate v. Fleischer

h. Metro-Goldwyn-Mayer v. American Honda Motor (p.242)

i. Honda made car commercial that was really similar to James Bond.

ii. Court found that the various dramatic elements were copied from James Bond films and also that the male characters were infringing on the James Bond character.

iii. Idea that characters visually depicted in a television series or a movie are entitled to more protection than purely literary characters.

i. Gaiman v. McFarlane (Supp p. 40)

i. Deals w/ Spawn comic book

ii. Court took a narrower view of comic character but gave protection saying it was sufficiently distinctive.

iii. Again distinction between graphic and purely literary character.

IX. Sound Recordings

a. Sound recordings as well as the underlying music are now copyrightable.

b. Most phonorecords have this dual copyright.

c. Usually the first time music is published is by sheet music but now it can also be published as a phonorecord.

d. Newton v. Diamond (Supp p.45)

i. Newton is a Jazz musician who makes recording and the Beastie Boys sample some of it. They had a license to sample the music but the question was whether the sound recording was different from the music b/c as a Jazz musician, he didn’t follow the score exactly.

ii. Court held that the Beastie Boys legitimately sampled the sound recording and any sampling from the underlying music was only de minimus.

Ownership – Chapter 2 of Statute (§§201-205)

I. Initial Ownership

a. Initial ownership is important b/c it makes a difference for exercising rights and often many rights get transferred.

b. Under 1909 Act a work was not copyrighted until it was published, at which point an author had probably already given his/her rights away. So copyright was given to whoever owned the work at date of publication.

c. 1909 Act – ownership was in proprietor at time of publication

d. 1976 Act – ownership is w/ author who fixed the work.

e. Also issues of joint ownership

f. Lindsay v. R.M.S. Titanic (1999 p.259)

i. L made documentary of salvage operations and then both he and RMS claim copyright. Lindsay came up w/ idea, storyboards, lighting, etc., but RMS divers did the actual filming.

ii. Judge says author is one who exercises great degree of control over final product, not necessarily the one who does the final work product.

iii. Relies on Andrien map case where the 3rd circuit held that the printer was nothing more than an amanuensis (equivalent of steno or typist).

g. Courts have come up w/ 3 ways to deal w/ complex authorship:

i. Pick one author and make him owner (like in Lindsay)

ii. Joint authorship – copyright gets split

iii. Works for hire – copyright resides in hirer

II. Works made for Hire

a. §201(b) – in cases of works made for hire, the employer is considred the author for purposes of this title unless the parties have expressly agreed otherwise in a written instrument.

b. §101 “work made for hire”

i. A work prepared by an employee w/i scope of employment OR

ii. A work specially ordered or commissioned for use in one of the ways below AND there is signed agreement saying it is a work made for hire:

1. contribution to collective work

2. part of motion picture or other audiovisual work

3. translation

4. supplementary work

5. compilation

6. instructional text

7. test

8. answer material for a test

9. atlas

c. Two main issues:

i. Who is the creative party?

ii. How much control was exercised?

d. 1976 Act does not define employee so Congress said to consider whether person claiming ownership exercised sufficient control so that the creative party was like an employee.

e. Community for Creative Non-Violence v. Reid (1989, p.263)

i. CCNV wanted to highlight plight of homeless. They came up w/ idea of modern nativity scene. They developed the base but hired Reid to design the statues. They made modifications to Reid’s design, checked on progress, had constant oversight. CCNV then wanted to take the sculpture on tour but Reid said it was too fragile to be moved and CCNV should make a mold. They refused and Reid sued.

ii. District court held it was a work made for hire.

iii. Court of appeals reversed and SC affirmed.

iv. SC disagrees that that first part of the §101 definition about employee applies to situations where the creative party is LIKE an employee.

v. The 1976 Act represented an underlying shift of control to creators.

vi. Decision of whether or not someone is an employee involves a balancing of factors that show control (from agency law).

1. skill required

2. source of instrumentalities/tools

3. extent of hired party’s discretion

4. method of payment

5. tax and employee benefits

6. other factors, see p.272

vii. Decided that Reid was not an employee but an IC and therefore it was not a work made for hire. Reid was author of sculpture. But remanded to consider whether they should be considered joint authors.

f. This balancing test initially led to a lot of confusion. Now the 2nd cir really only looks into a few factors:

i. Benefits? Tax withholding? Regular paychecks?

g. Really just lots of connection to agency law here.

h. This created a lot of problems for professors and others.

i. Martha Graham case (Supp p.68)

i. Martha Graham created a lot of dances while she was Artistic Director of the Center and she was getting paid.

ii. Court basically found that Graham was an employee and her estate did not own her works – they were made for hire. Focused on tax structure.

III. Joint Authorship

a. Joint authors are like joint tenants of property:

i. Both authors can use the work

ii. Any exclusive grant or transfer must come from both authors but nonexclusive grants can be given by either.

iii. Co-authors are fiduciaries to one another - $ must be shared

b. §101 joint author – two parties have intention that their work be merged into unitary whole.

c. This is hard b/c a lot of times parties aren’t thinking about it at the outset.

d. Thomson v. Larson (1998, p.284)

i. Question about whether Thomson contributed so much to Rent that she is co-author along w/ Larson. Larson died suddenly and Thomson wants credit on playbill and royalties. There was no written K.

ii. Court uses Childress standard for joint authorship:

1. Only applied as default when there is no K

2. Two pronged test: A co-authorship claimant bears the burden of establishing that each of the putative authors

a. Made independently copyrightable contributions

b. Fully intended to be co-authors

iii. The part that each co-author contributes must be capable of copyright independently. Posner rejects this idea in case in Supplement.

iv. Must intend from the outset to produce a joint work.

1. objective evidence

2. course of dealing, etc.

v. Court finds that while Thomson contributed copyrightable parts, Larson had no intent for them to be co-authors.

vi. No joint authorship.

e. This has far reaching consequences b/c a lot of authors/artists don’t realize this intent requirement and b/c they usually aren’t thinking about it in the beginning.

IV. Transfers of Rights

a. Governed by §201(d) and §204

b. Principle of divisibility - the different rights under copyright can be divided. This is a new idea under the 1976 act.

c. Exclusive sub-interest vs. nonexclusive license

i. When you give an exclusive sub-interest the person you give it to stands as the copyright owner w/r/t that interest. You can only give that interest away once to one party.

ii. You can give nonexclusive licenses away multiple times to various parties

d. However, this has made it harder to know who owns all the pieces of a copyright, especially if someone is trying to “put them together” again.

e. Copyrights can be transferred in whole or in part but if an exclusive right is being transferred, it must be transferred in writing.

f. Effects Associates v. Cohen (1991, p.299)

i. Cohen hired Effects to make scene of exploding yogurt for his horror movie. He paid them less than in the agreement and then used the footage w/o obtaining a written license or assignment. Effects sued infringement.

ii. Judge said the verbal agreement was a non-exclusive license. It conveyed a right to use, by implication, but not an exclusive right to use.

iii. It was pretty unclear whether Effects would really ever be able to license this to someone else though – not really useful.

g. Contributions to larger works - §201(c)

i. Unless there is an express agreement to the contrary, if a person contributes to a collective work, the owner of the collection only has the right to publish it in the collection and in later editions of the same collection.

ii. Copyright stays w/ author in absence of agreement

h. New York Times v. Tasini (2001 p.325)

i. Freelancers contributed to NYT issues and then NYT put them into Lexis Database. Freelancers claimed NYT couldn’t do this b/c if a search was done, the article did not come up as part of the original issue (not in the compilation) – didn’t have license to give article to Lexis.

ii. SC holds that licensing the work of freelancers to electronic databases is not allowed.

iii. Now this is just added to freelancer Ks.

i. Implications – can Google scan works that will otherwise be lost?

j. HeinOnline method of scanning entire work does not violate b/c you see the entire compilation.

Duration, Renewal and Terminations of Transfers

I. Duration and Renewal

a. Constitution says that copyrights must be for limited times but never says what the limited time should be.

b. §§302-304 Various Terms of Copyright: see p.360 and Amy’s outline for chart.

i. 1791-1909: 14 + 14 and tied to life of author

ii. 1909-1978: 28 + 28 and tied to author and successors

iii. 1978-1998: life + 50

iv. 1998-present:

1. in general: life + 70

2. joint authors – life of last surviving author + 70

3. anonymous/pseudonymous works and works made for hire: 95 years from date of 1st publication or 120 years from creation, whichever expires first.

c. Eldred v. Ashcroft (2003 Supp p.75)

i. Challenge to the constitutionality of the Sonny Bono Copyright Term Extension Act under “limited times” provision.

ii. The Act was really to bring the US into Berne – make us compatible.

iii. SC upholds the act but seems like there are somewhat irritated by it.

iv. The best argument was that the new act caught up other works that had already been created – gave extension to works already created – and so there was no economic incentive reason for that.

v. But previous acts had done the same thing – so no real problem.

vi. Breyer dissent: thinks this has gone too far, created perpetual copyright b/c the extra 20 years doesn’t given any more economic value really.

d. Factors to consider in setting copyright duration:

i. Creating incentives and Protecting investments of authors

1. How long do we need to give in order for author and other industry players to recover cost of creation and publication?

2. How long to make author create?

ii. Preventing demoralization costs

1. Idea that it is demoralizing for an author to see someone else be able to exploit his work

2. But this doesn’t explain terms that last beyond life

iii. Provide for author’s family when gone

1. Makes sense since in case you die suddenly but not necessarily a compelling reason for copyright.

2. Extend the propertied class?

e. When extending copyright you should recognize that the costs get imposed on more and more people (public) and the benefits go to fewer and fewer people.

f. Now that works are copyrighted at creation and not just publication, and the terms are so long, a lot of junk gets protected and works are removed from public domain w/o any real benefit to authors (b/c they don’t always own the rights, usually give them up w/ first sale).

g. Under §302(e) there is a presumption that if the copyright Office does not have a record of death, and then the work is in the public domain 95 years after publication or 120 after creation.

h. Purposes of Renewal:

i. It is hard to know at the outset how valuable a work will be

ii. Renewal allows authors or their successors to recapture value if their work turns out be successful

iii. Renewal gives fresh title to the work, as if it were being created for the first time again.

i. §304 renewal provisions:

i. List of people who can renew works

ii. Allows for wills to be overwritten – Ex: even if you leave something in your will, if there is a widow she can renew instead.

j. Problem set on duration and renewal: see notes/Amy’s outline

k. Make sure to use chart when doing problems!

l. Things you generally want to know:

i. Who is the author? Is it a person or a work for hire? How many are there?

ii. Is the author(s) alive? Are we in the 70+ period?

iii. Is the author the owner of the copyright or did it transfer?

iv. W/ unpublished works, must find out if author died (b/c get life + 70 or until 2002 whichever is longer)

v. For works published before 1964, must ask if it was renewed!

vi. Also, if work was eligible for renewal before 1992 (when it became automatic) must ask whether proper person renewed.

m. Fred Fischer Music Co. v. M. Witmark & Sons (1943 p.353)

i. Previously authors could alienate their renewal term and assign it to publishers.

ii. SC held this was okay – you can alienate interest in the 2nd term from the first day of the 1st term.

iii. This was in tension w/ the purpose of renewal and is later changed only if the author has died before renewal.

iv. If the author is alive at time of renewal, the assignment stands.

n. Broadcast Music, Inc. v. Roger Miller Music, Inc. (2005 Supp p.105)

i. §304(A)(1)(c) gives list of people who are entitled to renew under particular circumstances.

ii. This case highlights the complications that arise from that language

iii. The statute doesn’t indicate how the parties who are entitled to renew are to share their interests.

iv. Consensus had been that they all shared equally

v. But in this case, 6th cir says 50% goes to widow/widower and then the remainder 50% goes to children.

vi. We don’t know if this rule will survive.

o. Luck’s Music Library v. Gonzales (2005 Supp p.114)

i. Ps challenged §104A which brought foreign works that were in the public domain back under copyright.

ii. This was done to make US compliant w/ Berne

iii. Court said it was okay.

II. Duration and Renewal: Derivative Works

a. What happens to derivative works when the copyright in the underlying work is not renewed or is renewed by someone other than original author?

b. When you renew, you get granted fresh rights as if the 1st term had never happened. So what happens to licenses that were granted during 1st term?

c. Rohaer v. Killiam Shows (p.364)

i. Film based on a novel. The author of the novel, which was made into the movie, had given the rights to use the book in the film in the first and the second term. The author died before the renewal term and the daughter got the renewal rights. The daughter wanted to re-sell the rights to the movie.

ii. Where a derivative work maker negotiates rights for the first and second term, but the author dies before the first term, the owner of the rights of the derivative work can exploit them independent of the underlying work

d. Stewart v. Abend (p.363)

i. W writes short story, Rear Window. He assigns movie rights to Hitchcock/Jimmy Stewart. Hitchcock shows movie on TV. W dies and leaves rights to story to Columbia University which then sells it to Abend. Abend renews copyright. Abend sues Stewart when he shows movie on TV during 2nd term of copyright.

ii. SC recognizes the problem Rohauer creates for copyright owners but says renewal is a statutory provision. You can show movie but must pay.

iii. The purpose of renewal is to recapture value, even in derivative works.

iv. If you can’t pay, then you have to wait for 2nd term to expire.

v. This is a huge problem for some works that are important, like a Hitchcock movie – gives owner of renewal term a lot of bargaining power

e. Problem of automatic renewal for derivative works:

i. If copyright owner takes advantage of automatic renewal, the transferee can continue to exploit already created derivative works!

ii. This is an attempt to address Stewart/Abend problem.

iii. So if you want to re-exploit derivative works, then register renewal w/i the year before the term runs out.

III. Termination of Transfers

a. Once Congress abandoned 2 term copyright, had to come up w/ another way for authors to potentially recapture value.

b. Two different provisions cover termination:

i. §203: allows the copyright owner and his/her successors to terminate Ks made in relation to the copyright after 35 years and before 40 years.

1. This allows you to cut grants short if they proved to be very valuable

2. It is impossible to give up your right to terminate! BUT copyright grants in works made for hire cannot terminate.

3. This covers grants made after 1978, not necessarily works made after 1978.

ii. §304: permits termination regarding add-on period for copyrights in their 2nd term at start of new Act.

1. You can get rights back 56 years after 1st term

2. The extension didn’t apply to termination rights.

3. This covers grants made before 1978.

c. You must file a notice to terminate

d. You can file 2-10 years in advance from when you are going to terminate

e. Must give at least 2 years notice but not more than 10 years notice

f. SEE chart p.377 or in Amy’s outline about who can terminate and when.

g. Marvel Characters v. Simon (Supp p.121)

i. You cannot enter into an agreement stating that a work was a work made for hire, after the work has already been created.

ii. This is an issue b/c creators cannot terminate works made for hire.

h. Problem set on termination – see notes or Amy’s outline.

i. Things to think about:

i. When was the grant made?

ii. If copyright was before 1976, was it in second term? Renewed? Etc.

iii. Termination does NOT apply to existing derivative works! Termination can only apply to unexercised grants.

iv. Under §203 – Grants not executed by the author cannot be terminated (so if widow/successor made grant, they can’t terminate)

v. Grants made by will cannot be terminated.

vi. There are no termination rights in works made for hire.

vii. §203 In cases of multiple authors – only a majority is needed to terminate.

1. But upon death termination rights get divided per stripes

2. Must look to widow/widower, children and grandchildren

3. Each interest must vote by majority for that vote to be counted as a vote for termination. SEE notes on termination problems.

viii. §304 – in cases of multiple authors ALL authors/interests must vote to terminate. Parties are treated as tenants in common.

1. Termination can also be made by people who gave grant, even if not the author!

2. But if author has 3 children they must all vote to terminate.

3. Also, interest does not succeed – if author’s children exercised the right, their children cannot.

4. The right does not go down to the next generation.

Formalities

I. Pre-1976

a. Three sets of formalities that had to be followed:

i. Notice

1. Meant to tell public who was owner (not necessarily author)

2. And year of publication

ii. Registration

iii. Deposit

b. A lot of works fell into public domain b/c formalities were not followed

c. Copyright attached at publication but 1909 Act did not define publication

d. You were allowed to have limited publication w/o actually publishing.

e. Estate of Martin Luther King, Jr. v. CBS (1999 p.389)

i. 200,000 people heard the speech live and it was carried on TV and radio news. Civil rights activists actively tried to disseminate it to press.

ii. Despite this, court said there were material issues of fact as to whether general publication had occurred.

iii. When copyright notice was finally attached, it came under statutory copyright.

f. Theory that limited publication gave authors opportunities to pass out drafts, receive feedback, etc.

g. It was a way of preventing things from falling into public domain even though authors had not followed formalities.

II. 1976 Act and Berne Amendments

a. Retained formalities but in a different form – no longer mandatory but encouraged

b. Notice still required but you have 5 year period to cure it if missing.

c. People who didn’t receive actual notice were treated as innocent infringers.

d. Hasboro Bradley v. Sparkle Toys

i. No copyright notice on toy in Japan.

ii. Court allowed them to fix it even though it had been left off deliberately.

e. 1989 – US signs onto Berne

f. Notice is no longer required but is only optional.

g. But if there isn’t notice, there is a limited innocent infringer safe harbor – so you should probably do it anyway.

h. Congress put more weight on registration though – can serve important purposes and ease discovering who actually owns copyright.

i. Congress created incentives for people to register – cannot force them but push

i. You don’t’ have standing to sue unless you register (§411)

ii. No statutory damages or attorney’s fees for infringement that took place before registration (§412)

iii. Registration is prima facie evidence of valid copyright.

iv. These only apply to copyrights under US law (b/c of Berne)

j. Deposit is still required – you won’t lose your copyright but you will be fined.

Rights, Limitations and Remedies - §106 and §106A

I. §106

a. Subject to §§107-121, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following;

i. Reproduce copyrighted work in copies or phonorecords

ii. Prepare derivative works based upon the copyrighted work

iii. Distribute copies or phonorecords to the public by the sale or other transfer of ownership, or by rental, lease or lending

iv. To perform the work publicly (for everything except sound recordings)

v. To display the work publicly (for everything except sound recordings)

vi. In the case of sound recordings, to perform the work publicly by means of digital audio transmission

II. The Right to Make Copies

a. Two main problems to think about

i. Non-literal similarity – intended to capture sense of the work

ii. Literal, partial similarity – takes parts of work and incorporates those parts into something else

b. Summary of proving copyright infringement:

i. 1) Show that the work was copyrightable

ii. 2) Show actual copying (in one of two ways)

1. Direct evidence

a. D admits copying or

b. Other direct evidence like witness testimony

2. Circumstantial evidence

a. Access

b. Similarity (a stronger showing of similarity means you don’t have to have as strong a showing on access and vice versa)

iii. 3) Show infringing copying

1. Exact duplicate or

2. Substantial similarity through qualitative and quantitative analysis

Actual copying:

c. Arnstein v. Porter (1947 p.420)

i. Arnstein wrote religious music that wasn’t that popular and claimed that Cole Porter stole his music. He was probably crazy but actually sued.

ii. Court sets out analysis for copyright infringement.

iii. You must first establish that you have something to protect – that your work is copyrightable and copyrighted.

iv. Then you must show actual copying and infringing copying. Sometimes this two elements will blend but not always. Ex: Feist was actual copying but not infringing copying.

v. Actual copying – direct evidence or access and similarity

1. For access, you don’t have to show that D actually held P’s work in their hand, only that work is publicly available

a. Relationship between access and similarity is a sliding scale

b. If there is evidence of access, then similarities might not have to be as strong

c. If there is no evidence of access, then similarities must be so striking as to preclude the possibility of independent creation.

2. When there is access, burden falls unto D to prove independent creation.

3. Often this question is left to the jury.

vi. Question of illicit copying:

1. Judge Frank thinks the test is the response of the ordinary lay observer – dissection and expert testimony should be irrelevant but he thinks you can bring them in to aid jury.

2. An issue of fact for juries to determine

3. Judge Clark – thinks no experts should be brought in. Should be totally up to lay jury b/c what really matters is whether something of economic value was taken – whether it sounds the same or not.

vii. Expert testimony/de minimus debate between Frank and Clark:

1. Clark: looks at it in economic terms. Experts don’t matter b/c it only matters if ordinary people think it’s similar – value to the public. Don’t want to confuse juries and have them focus on little things like fillers that all compositions will have.

2. Frank: Doesn’t think this is a problem. Only cares whether anything was copied. If you show copying, there is grounds for recovery and damages can reflect if what was taken was only insignificant.

d. Dawson v. Hinshaw Music (p.425) – the audience to test substantial similarity should be audience intended by author. So it might be expert or it might not.

e. Lyons Partnership v. Morris Costumes (p.426) – audience should be kids b/c they were the market for dinosaur costumes.

f. Bright Tunes Music Corp. v. Harrisongs Music Ltd. (p.427)

i. Argument over whether George Harrison independently created “My Sweet Lord” which sounded almost exactly like “He’s So Fine” by the Chiffons.

ii. Problem is that there were striking similarities and Chiffon song had been on Billboard charts (so lots of access) but there was also a lot of direct testimony of independent creation.

iii. Court can deal w/ these situations in 3 ways:

1. Independent creation means that P loses

2. Such striking similarity that it is clear copying, rule for P

3. Leave it to the jury to decide

iv. Court holds there was subconscious copying – almost a case of strict liability. If it is so similar and there is access, you copied.

v. BUT this is considered “innocent” infringing

vi. Still liable but recognized that it is not intentional. But still pay damages.

Infringing copying – substantial in quantity and/or quality. De minimus? Look and feel?

g. Ringgold v. Black Entertainment TV (p.435) – de minimus issue

i. P created poster of a quilt. Poster was shown on TV show for no more than 2 min during ½ hour, but not all at once.

ii. Question was whether this was actionable copying? This was clearly unconsented use of copyrighted material but was it too fleeting?

iii. Substantial similarity for proving infringement:

1. Copying must be quantitatively and qualitatively sufficient

2. Qualitative component concerns copying of expression rather than ideas

3. Quantitative concerns amount of work that is copied

iv. De minimus can go to quantitative analysis for substantial similarity. Can go to length of time work is observed or portion taken (as in fair use)

h. Ticketmaster Corp. v. , Inc. (p.437)

i. had links to other sites for buying tickets.

ii. Engaged in two acts that Ticketmaster challenged:

1. Actual temporary copying to extract information

2. Permanent copies of URL links (this allowed users to bypass Ticketmaster home page where ads were)

iii. Court held that fair use excused the temporary copying to extract facts

iv. Also that copying URL was not infringement b/c it URL is merely functional and factual material.

i. Peter Pan Fabrics v. Martin Weiner Corp. (p.439)

i. Problem of copyrighting something that is very simple or has a model in nature or the public domain.

ii. In this case a fabric pattern was a variation on a pattern in the public domain. Did D copy and infringe P’s work? Or come up w/ same thing based on pattern in public domain?

iii. Hand says that the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them and that is enough. (?)

j. Herbert Rosenthal Jewelry Corp. v. Kalpakian (p.440)

i. Famous bejeweled bee pin case

ii. Court says there are only so many ways to make a bee pin – merger

iii. So no copyright.

iv. Difference is one of degree and the guiding consideration in drawing the line should be the preservation of the balance between competition and protection reflected in copyright and patent laws.

k. Educational Testing Services v. Katzman (p.443)

i. K ran Princeton Review and used questions that were very similar to ETS test questions to prep students. Real problem here is that the questions have to be similar or it loses all value.

ii. Court found infringement on the grammar question but not on the other math questions. (b/c there are fewer ways to ask math questions?)

Problem of substantial non-literal similarity

l. Didn’t want people to evade claims of copying just by making small changes

m. But this became a real problem w/ derivative works – if you make what is arguable a recognizable translation into a different medium, you have violated copyright owner’s right to derivative works.

n. However, must balance this against possibility that copyright owner has just tapped into universal/resonant theme so copying might not have anything to do w/ first work.

o. Really a problem of line drawing.

p. Nichols v. Universal Pictures (p.446)

i. Is “The Cohens & The Kellys” an infringement of “Abie’s Irish Rose?” They are very similar in a number of ways – but is it just idea being taken?

ii. Hand says we must think about structure – also idea of concentric circles of detail. Every time you add a layer you get closer to copyrighted expression. This is imprecise though.

iii. Similarity in broad themes will not be enough but what will?

iv. You can always abstract what is going on and show lots of similarities. But the basic themes and basic characters (if stock characters and indistinct) are ideas and not expression.

v. While the line may seem arbitrary, we still must draw it.

vi. No infringement.

vii. Test is basically same look and feel though and this is a pretty close case.

q. Sheldon v. Metro-Goldwyn Pictures (p.451)

i. This show us what happens when you get into the “circle” of copyright but Hand never really says how he got there.

ii. Case deals w/ a number of different works all based on true events (life of Madeline Smith) – a novel, a play and a screenplay/film.

iii. You must abstract that copyrightable elements – don’t look at similarities in parts based on facts. Only look to similarities in the fictional elements.

iv. D argued that these fictional elements were all common plot devices though – in the public domain.

v. Hand looks at the sequence of events – how the stock devices were used together. Looks like taking selection and arrangement of plot devices.

vi. Looks a little like compilation argument.

r. Two approaches to substantial non-literal similarity:

i. Judge similarity w/r/t the whole of the copied portions, including portions that viewed in isolation may not be eligible for copyright

1. This is what Hand did by looking at the sequence of “scenes a faire” in the play

ii. First remove all uncopyrightable elements, then look at what was taken

1. Dissection and analysis or abstraction and filtration idea

2. Hand did this a little bit by taking away factual elements first.

3. This approach is favored more for nonfiction works and when giving protection would result in monopoly of a common theme

s. Computer Associates Int’l v. Altai (p.465) abstraction and filtration

i. Court adopted this abstraction and filtration approach, removing “unprotectible” elements before comparing the computer programs

ii. Altai copied both some parts of CA’s code and also there was non-literal copying of the structure of program.

iii. Court found infringement easily on literal copying of code but structural similarities were harder.

iv. When looking at the structural similarities, judge took out those elements that were functional/efficient/scenes a faire – if there was only one way to generally do this, then there is merger of idea and expression so no copyright.

v. Only after that will look to see if there is anything copyrightable.

vi. This basically removes Hand’s “compilation” argument for the way these unprotectable elements are strung together.

vii. The combination of Lotus and this case have essentially rendered copyright insubstantial for computer programs – must use patents.

t. Steinberg v. Columbia Pictures Industries (p.480)

i. Similarity between Steinberg’s New Yorker Magazine cover and poster for Moscow on the Hudson movie.

ii. There is clearly access (D admits) and substantial similarity

iii. Court looks at style, perspective, layout, etc.

iv. Result is that the two pieces have the same “look and feel” so there is infringement.

v. Why is “look and feel” considered an expression and not an idea?

vi. Bottom line is that we don’t really know difference b/t expression and idea until the court tells us in a specific case.

vii. This case has serious implications for art world

1. Artists often copy from one another and many play around w/ similar styles – ex: cubism, impressionism, etc.

2. How can we copyright a style? Won’t that completely chill artistic development?

3. Should it depend on the artist’s intent? To copy or to experiment?

4. All art builds on previous works. This is a real problem.

5. So in the case of art, copyright might NOT promote the progress of science and the useful arts. It might impede it.

6. Should we have the same standard for infringement in different mediums/genres?

u. Kirsch v. Ammirati & Puris Inc. (p.488)

i. Two photographs taken in same restaurant, in same corner, both w/ person holding instrument, etc.

ii. Court finds the same look and feel.

iii. Court doesn’t say infringement but says enough evidence to go to the jury on that issue.

iv. What can an artist do to protect against cases where he really did independently create but it has same look and feel?

v. Another problem of authors reproducing works in which they no longer own the copyright.

w. Gross v. Seligman (p.495)

i. Artist took a picture and then sold the copyright. Two years later, he basically redid the picture – used same model, background, etc., only very minor differences.

ii. Court found infringement of first picture!

x. Franklin Mint v. National Wildlife Art Exchange (p.496)

i. Artist created painting, sold copyright. Then created a new, similar painting.

ii. Court found no infringement b/c of idea vs. expression

iii. Court held that artist is free to use the same source material to create a different painting depicting the same subject matter.

III. The Right to Make Phonorecords

a. Sound recordings are usually about a captured performance

b. Sometimes they also contain original music that is being copyrighted for first time but usually just a performance of already copyrighted music.

c. The right to make sound recordings is limited by two sections: §115 and §114

d. §115 deals w/ use of the musical composition

e. §114 deals w/ use of the sound recording

f. §115 Compulsory License

i. Basics:

1. For a set sum of money, you have right to use music – to make your own recording of the music. Copyright owner cannot refuse.

2. License is not subject to individual negotiation – flat rate for all.

3. You cannot get a license until the music is published (made public)

4. First recording gets made through individual negotiation

5. Only covers music captured in a performance and made available for sale to general public

ii. Limitations:

1. Courts have been strict in applying §115 – once you add visual elements to the sound recording – like w/ karaoke, it is not subject to the compulsory license

2. ABKCO Music v. Stellar Records (p.500) – compulsory licenses do not give you the right to display the lyrics on a screen. Compulsory licenses permit recording of a “cover” song but lyrics have a separate copyright.

3. You cannot make a derivative work §115(a)(2)

a. You can make certain adaptations that relate to style of performer or necessity of performance

b. You cannot fundamentally change melody or character

iii. Procedures

1. Timing

2. Must give notice to copyright holder and Copyright Office

3. Accounting provisions – paying royalties

iv. Harry Fox Agency and Collective Rights Organizations

1. §115 procedures are hard for individuals to follow so music industry came up w/ collective rights organizations to monitor

2. Harry Fox holds as licensee, the §115 rights of composers

3. So when you want a compulsory license, you go through Harry Fox and not the actual author

4. HF manages the numerous small transactions

5. Cuts down on transaction costs of managing such small rights. The rights are only valuable collectively.

g. §114 Rerecording (Anti-piracy) vs. Recreating (?)

i. This section severely cuts down on rights of copyright owners to sound recordings.

ii. No one is allowed to rerecord your recorded sound w/o a license

iii. BUT anyone can recreate your music exactly under §115.

iv. This section is purely an anti-piracy device

v. You can perform or air recording publicly, just not rerecord it. (like over a loudspeaker)

vi. Issue of sampling:

1. §114 technically prevents sampling, even de minimus

a. you cannot reduplicate sound at all or

b. take actual sounds and rearrange, remix or otherwise alter the sequence or quality

2. 6th Cir says there is no de minimus rule – any sampling is infringement

3. This might not be reasonable but it is in keeping w/ §114

IV. Moral Rights

a. Moral rights are INALIENABLE

b. Moral rights are distinct from economic rights in copyright. They belong to the author and do not travel w/ sale of copyright.

c. Basic moral rights:

i. Right of divulgation – first publication

1. We protect this explicitly under §106 but not b/c it is a moral right

ii. Attribution rights (or right of paternity)

1. You have the right to have your work attributed to you AND

2. You have the right to demand work not be attributed to you if it isn’t yours or not reflective of your work – can get name taken off

iii. Integrity rights

1. People cannot alter the integrity of the work

2. Idea that art is part of the artist.

d. US has typically been hostile to moral rights b/c:

i. Moral rights reflects view that relationship b/t author and work is intensely liberty based.

ii. We have more of a legal monopoly view than a natural rights view

iii. We favor alienability and ability to create individualized K terms.

iv. Worry that publishers might be afraid to edit books, screenplays, etc.

v. Fear giving authors right to engage in private censorship

vi. We don’t just copyright fine art so it seems weird to give integrity rights to something like label of shampoo

e. The Berne Convention requires that countries protect moral rights.

f. But US has gotten pass since it was decided that we have equivalent coverage

g. In the US though, moral rights really only come up in context of fine art

h. Gilliam v. American Broadcasting (p.527)

i. This is the closest the US has ever come to really protecting moral rights.

ii. Monty Python licensed shows to Time-Life and gave them right to edit but only for addition of commercials. D argued it was standard industry practice to edit out content for FCC and cut for time/advertisements. MP sued saying had ruined the work.

iii. Court says license did not allow right to make changes – no implied consent to edit.

iv. Also recognized that while US doesn’t protect moral rights, does recognize K rights and grants relief for misrepresentation.

v. Claimed that it was a misrepresentation to the public

vi. This is the only case on moral rights for non-visual work.

i. Visual Artists Rights Act of 1990 – §106A (p.534 and Supp)

i. Limited provision protecting moral rights in works of visual art.

ii. §101 definition of “work of visual art” – very small segment of general art

1. Paintings, drawings, prints, sculptures or photographs

2. Existing in single copy (unique) or in limited signed editions of 200 or less

3. Does not include:

a. Posters, maps, globes, charts, diagrams, motion picture, etc.

b. Any advertising or promotional item

c. Any work made for hire

iii. Work must be of recognized stature – Really an attempt to extend moral rights to “fine art” – Question whether this is only for destruction.

iv. Only applies to works created after June 1, 1991

1. If work was created after 6/1/91 then VARA coverage is for life of author

2. If work was created but not transferred before 6/1/91 then coverage is for life +70 ?

v. Allows artists to waive their VARA rights

vi. Includes the following rights:

1. Right to proper attribution

2. Right to dissociate name if work is mutilated, altered, etc. to extent that it would prejudicial to reputation

3. Right to prevent any intentional distortion, mutilation, or other modification (injunctive relief and damages)

4. Right to prevent destruction of works of recognized stature

vii. This gives artists a consideration amount of power.

viii. Also connects to §113(d)

1. Deals w/ works incorporated into building where it might destroy the work if the building is torn down, altered, refurbished, etc.

2. Generally owner of building must make good faith attempt to notice artist of possible harm and try to remove the art.

3. Must get signed agreement from artist allowing removal.

ix. Carter v. Helmsley-Spear (p.535)

1. Installation in hotel lobby. Buyer wants to remove b/c thinks its hideous and wants to turn into high end apts. Did not get permission from artist under §113(d).

2. Court ultimately decided it had been a work made for hire and so not subject to VARA.

3. So there was no resolution on §113 issue.

x. Phillips v. Pembroke Real Estate (Supp p.149)

1. Phillips designed site specific art for park. Real estate company wanted to move some of the pieces. Phillips claimed that would be destroying his art under VARA.

2. Court says park cannot be a work of art.

3. Artist is really just complaining about movement/placement of his pieces and that is not covered by VARA or §113 unless such movement would destroy.

4. Here, it will not destroy the individual pieces to be moved.

5. The state VARA gave more control – question whether it should be preempted.

6. Seems like Court gave protection under state MAPA (?)

j. States can enact their own moral rights/VARA acts and they can possibly go further than the federal laws.

k. Wojnarowicz v. American Family Ass’n (p.540)

i. Artist brought action to stop AFA from using parts of his imagery in pamphlet against gays.

ii. Court held AFA could criticize his work but only if they showed full reproductions – they used cropped images and this was false attribution

iii. Court only awarded nominal damages though and dismissed infringement claim based on fair use.

V. The Right to Distribute

a. The §106 right of distribution is limited by First Sale Doctrine (§109(a))

b. First sale doctrine:

i. Any interest the copyright owner has in controlling distribution is exhausted once the work is sold for the first time

ii. Once you own a particular copy, you can sell it to someone else if you want.

iii. This doesn’t apply to wholly new distributions/editions, just subsequent distributions of the same copy.

iv. You cannot make derivative works but can possibly recast form in which you originally acquired work

c. Fawcett Publications v. Elliot Publishing (p.547)

i. Sale of comic book collections were D just resold P’s comics under a different cover and combined w/ other comics.

ii. Court held this did not violate right to distribution

iii. This was not a derivative work just a resale of previous copy.

d. Some courts have held that making material available on the web is distribution as well as reproduction (see p.545-6)

e. Quality King Distributors v. L’anza Research Int’l (p.553)

i. Relationship of importation to first sale doctrine.

ii. No ban on reimportation of works sold abroad for cheaper (?)

f. First sale doctrine has been cut back in two places (see p.549-551):

i. Renting of records/videos/sound recordings

ii. Renting of computer software

1. This is really b/c in these areas rental was more like allowing private copying and the industries lobbied Congress

g. Policy behind first sale is to make works available to people who cannot afford to pay market value – public access theory

h. This is a big compromise of economic rights.

VI. The Right to Perform and Display Publicly

Performance

a. This right is not uniformly important or economically significant except in some industries.

b. Under 1909 Act, copyright owner could only control public performances for profit.

c. But it wasn’t easy to determine what was “for profit”

d. In 1976 Act, Congress changed focus from profit to “public” but there are still many ambiguities in definitions

i. Performance is whenever someone plays a captured performance (i.e. stereo, VCR, movie, etc).

ii. Public performance has more ambiguities:

1. Performed in a public place, i.e. open to the public

2. Or performed at place where substantial number of persons are present (not including family or friends) (really arose b/c of problem of private clubs, like country club – these are now considered public)

e. There were still ambiguities – did Congress mean to focus on audience more or place of performance?

f. Columbia Pictures Industries v. Aveco (p.564)

i. Before VCRs became really popular, video rental stores provided rooms to w/ either VCRs or TV screens to watch rented movies. Movie industry wanted to find a way to capture some of these profits.

ii. Redd Horne case was first of these:

1. Central VCR hub that would project movie to specific room.

2. Court concluded this was violation of public performance

iii. Aveco tried to get around this by putting individual VCRs in each room so that the renter controlled them.

iv. 3rd cir says this is still public performance b/c Congress meant to include any performance that takes place at a public place, regardless of audience.

g. Columbia Pictures Industries v. Professional Real Estate Investors (p.568)

i. This is a 9th cir case in direct opposition to Aveco.

ii. This case involved motels renting movies to customers

iii. 9th Cir said it was ridiculous not to look at audience/nature of performance

iv. As long as audience is just friends/family it is not per se a public performance

h. It makes the most sense of the nature of audience to be dispositive but we still don’t really know on this issue.

i. Problems w/ Broadcast Technology:

i. Can look at broadcasting in two ways:

1. Broadcasting is passive act that merely extends geographic area of an already public performance (just amplification)

2. Each broadcast along the way is another public performance, perhaps b/c it reaches a different audience

ii. Under 1909 Act, courts originally took the 2nd view – each intermediary broadcast was a separate performance and had to be licensed. This allowed copyright owners to capture some of the value from this.

iii. Advent of BMI and ASCAP allowed them to capture benefit better so now usually don’t count each broadcast

j. BMI and ASCAP are collective public performance licensing groups

k. Licensing of public performances is covered by §110.

l. §110 exempts certain performances

i. non-profit educational performances – schools, religious organizations

ii. small businesses, etc.

iii. Aiken case – Mom and Pop store, this became codified in §110(5)(b)

iv. Lots of specifications for size/equipment, etc.

v. This means that for lots of restaurants and businesses, licensing is no longer a problem.

vi. Music industry didn’t even seem to really care b/c these were hard to police and litigate anyway

Public Display

m. Generally speaking author has right to control display but:

n. §109(c) gives owner of single copy right to display in a gallery or show a projection in the vicinity where it is located.

o. Right to display really comes up w/ internet cases.

Fair Use – §107

I. Fair Use and the Creation of New Works

a. Background:

i. Fair Use under Berne Convention

1. Berne has some provisions that are like fair use:

a. Article 2 – gives countries right to decide how to use political speeches

b. Article 10 – once a work is published, it is not a violation of the Convention to allow quotations

2. But generally, each country can decide what is fair use

ii. Fair use is fairly liberal in the United States

iii. Originated in common law – there was no statutory fair use until 1976 Act

iv. Folsom v. Marsh (1840’s, p.618)

1. First time fair use made an appearance

2. This was before derivative works were part of copyright

3. Large extraction taken from George Washington letters

4. Justice Story said we should look to effect on market of 1st work

5. Is the new work a substitute?

v. As derivative works became a right, the question was more complicated b/c there would not be exact substitution.

b. Why allow fair use at all? Three theories:

i. Fair use effectuates public benefit theory

1. Public should get maximum use out of a work as long as author is not harmed

2. Helps progress

ii. Fair use makes copyright and free speech more consistent

iii. Fair use is a way to deal w/ market failure

1. Transactions costs of licensing are high

2. We will never realize social benefits if costs are so high

3. ASCAP and BMI were one way to deal w/ this but it might not always be feasible to form collective rights orgs if requests for certain rights are sporadic, scattered and of limited economic value

4. As internet and digital options become available, transactions costs go down and this theory loses force. Eventually no fair use then!

5. So this can’t be your only theory for fair use

c. Courts are not unified in their theories on fair use

II. §107 and Basic Fair Use Analysis

a. Preamble lists non-exhaustive, illustrative list of purposes that constitute fair use (all examples of social good):

i. criticism

ii. comment

iii. news reporting

iv. teaching (including multiple copies for classroom use

v. scholarship

vi. research

b. 4 factors to consider:

i. Purpose and Character of the Use

1. Commercial vs. Noncommercial

2. Transformative?

ii. Nature of the Copyrighted Work

1. Creative work or more fact based? Thick or thin copyright?

2. Published/unpublished?

iii. Amount and Substantiality of portion used in relation to whole work

1. Quantitative?

2. Did portion go to heart and soul?

iv. Effect of the use on the potential market or value of the work

1. Is the new work a substitute?

2. Is this a market the owner is likely to exploit?

c. The fact that a work is unpublished is not a bar in and of itself to a finding of fair use. Should still use the factors above.

d. The TWO MOST IMPORTANT factors are (1) and (4).

e. Fair use is an affirmative defense to a claim of infringement.

f. Campbell v. Acuff-Rose Music (p.616) – 2 Live Crew case

i. 2 Live Crew asked for permission to use “Pretty Woman” in a parody rap but they were refused. Acuff-Rose sued when they used it anyway.

ii. 6th Cir thought this was really commercial so no fair use. Assumed that the first factor was dispositive, so if it was commercial, no fair use.

iii. SC reverses, says commercial use is not dispositive.

iv. The purpose of copyright is not to reward copyright owners but to promote creativity.

v. The court asks is it a transformative use?

vi. Court decides that this is a parody and is sufficiently transformative.

vii. What does transformative mean?

1. Something new, doesn’t supplant original

2. Somehow makes us see the world differently

3. But really just means a use that the court decides is a fair use

4. And really just looks like a derivative work

viii. Rule before this case was that when doing parody you could only take the bare minimum to conjure up the original.

ix. Parody is not a market that copyright owner would probably license or allow – need fair use to make it happen. Don’t want to chill free speech by requiring licensing. This connects to copyright owner’s right NOT to make derivative works.

x. SC decides that parody has great social significance (suggest though that satire doesn’t depend on a particular work so won’t be covered)

xi. But how to resolve when something is parody or satire is never clear.

xii. Court goes through the 3 other factors and even though a great deal was used, says it’s okay.

g. Walt Disney v. Air Pirates (p.634)

i. Parody case before Acuff-Rose

ii. Court decides they took too much for parody

h. Suntrust Bank v. Houghton Mifflin (p.632)

i. Gone With The Wind and The Wind Done Gone

ii. The literary estate decides to license derivative works of GWTW but set strict rules about what the work could and could not do. No takers. Alice Randall writes unauthorized book, TWDG, same story told from perspective of the slaves. Very critical of GWTW characters.

iii. This was clear social commentary on romanticism of Southern slavery

iv. Court decided this was parody and transformative but said record was unclear as to other factors – whether this would harm Suntrust’s derivative market, etc.

v. Parties eventually reached settlement.

i. Mattel Inc v. Walking Mountain Productions (discussed in class)

i. D took pictures of Barbie dolls in kitchen appliancese and unusual positions to draw attention to beauty myth and social acceptance of women’s roles and women as objects.

ii. Court holds parody, transformative, fair use.

j. Harper & Row Publishers v. Nation Enterprises (p.636) – unpublished works

i. Nation writer, Navarsky, got copy of manuscript of Ford’s memoirs and printed large excerpt describing portion about Nixon’s pardon. Classic news scoop.

ii. Question of status of unpublished works after 1976 Act.

iii. Court goes through the four factors:

1. Transformative b/c used in a different article

2. Both are factual pieces so this cuts in favor of quoting (facts not copyrightable)

3. Very little was used quantitatively but qualitatively, took the most valuable part – part on pardon.

4. Effect on market is what killed the use here.

iv. Majority makes big deal about fact that what was taken was part most valuable. This seems to go against 2 Live Crew though, which also took the heart of Pretty Woman.

v. Nation had argued that 1st amend should trump copyright. But court says this is not situation where owner was unwilling to publish at all. More of an issue of right of first publication than anything else.

vi. Dissenters: say majority constructed per se rule against any fair use of unpublished works

vii. This case really tells us about unpublished works that are about to be published (no fair use) but not about unpublished works that copyright owners have no intention of publishing.

viii. What is the role of public importance of speech in copyright? Unresolved

k. Sundeman v. Seajay (p.650)

i. Unpublished status of manuscript weighed against fair use but all other factor in this case were in favor. Fair use.

l. Salinger v. Random House (p.650)

i. Salinger wanted to never publish these letters.

ii. Library made letters available on condition that they not be published.

iii. Court held that availability in library did not entitle copying for biographer

m. Craft v. Kobler (p.651)

i. D took excerpts of writing that they considered well expressed to give sense of realism to biography

ii. Court said this was not fair use. You can quote some to illustrate descriptive skill, power, vividness, etc. but this is not unlimited.

n. Castle Rock Entertainment v. Carol Pub. Group (p.654) – Seinfeld case

i. Seinfeld producers decided not to create trivia game so Ds made one. Then sometime later, Ps decide they do want to put out a game

ii. Judge decides not to treat this as fair use.

iii. Thinks this is not transformative but this is really debatable.

iv. Also says this is market they are likely to exploit.

v. The fact that this was used for pure entertainment and not some higher social purpose might have influenced the court.

o. Sega Enterprises v. Accolade, Inc. (p.658)

i. Issue of necessary intermediate copying

ii. Accolade wanted to make games that would play on Sega machines. But Sega only gave out code under license. So Accolade made a complete copy, reverse engineered, just to identify interface points, and then came up w/ compatible games.

iii. Court holds this is fair use!

iv. Where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use.

p. Problem of personal use – This has never been resolved.

i. Advent of copying technology brings this issue to the forefront

ii. Is it still fair use to make personal copies now?

iii. Williams & Wilkins case about photocopying

1. Scientific journal sued NIH b/c it had policy of making copies of medical journals on request – to further science.

2. Court says fair use. Govt wasn’t making $ on it, nor were the recipients of the articles.

3. SC affirmed by only 4-4 so no precedential value.

iv. Copyright Act doesn’t say anything about personal use like this

q. A lot of other equitable factors go into court’s determination, along w/ the factors specifically listed to be considered.

i. Whether the use is a large part of the D’s new work

ii. Whether D showed callous disregard to P’s interests

iii. Whether D could have compensated P in some way, etc.

r. Fair use is really about tension between protecting and creating incentives for the first author but allowing future creativity from others as well.

III. Fair Use and New Copying Technologies

a. Sony Corp v. Universal City Studies (p.669) – Betamax case

i. Universal sued Sony for selling the Betamax which allowed customers to tape shows on TV. Sued them instead of individual users b/c it was much easier to go after intermediary. Wanted to hold Sony liable for contributory infringement. 5-4 decision.

ii. Court looked to see if there was a legitimating use – fair use – that people could use the Betamax for.

iii. “The sale of copying equipment does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial non-infringing uses.”

iv. Difference between time-shifting and librarying

1. Sony actually advertised for customers to do both

2. But there was evidence that a lot of people used for time shifting

v. Court decided to focus on time-shifting. Can making a complete copy for personal, entertainment use be fair use?

vi. No bright line test for productive use.

vii. Don’t want to discourage invention or new technologies

viii. Court decides that time shifting is a fair use. And if there is a substantial fair use then the product is okay – no contributory infringement.

ix. Dissent: Doesn’t think the reasons people engage in time shifting is sufficient for fair use. Not socially laudable purpose?

b. Princeton University Press v. MDS (p.676)

i. MDS created course packets for professors and students. Advertises that it is not going to follow regulations of paying licensing fee, so it can do it cheaper than other copy shops.

ii. Argument for fair use – if it would have been fair use for students to make copies themselves, it should be fair use to use a more efficient intermediary.

iii. Court concludes no fair use. Not transformative, seems to be in same market (substitution), etc.

iv. Even though the end use is for educational purposes, MDS was making commercial profit off of it. Notion that if you’re making $ you should compensate the copyright owner.

v. Concern that this would displace textbook market or prevent scholars from writing b/c cutting into their revenue stream.

vi. Discussion of Classroom Guidelines which were not part of §107 but discussed as part of legislative history.

vii. Court opinion really targets the copy shop owners and not the professors.

c. Copyright Clearance Center (CCC)

1. Another collective rights organization

2. Licenses rights to photocopy

d. American Geophysical Union v. Texaco, Inc. (p.694)

i. Texaco circulates articles around office. People make personal copies of ones they think they might like to reference. This way Texaco only needs to buy one or two subscriptions.

ii. Could Texaco have just gone through CCC? CCC is more complicated than other clearing houses – it cannot guarantee that it owns the license it is giving b/c of the way journals do copyright (sometimes it remains w/ author, sometimes w/ journal).

iii. Court decides this is NOT a fair use.

iv. Archival personal copying – like librarying

v. Says it cuts down on subscriptions so it adversely affects market.

e. A&M Records v. Napster (p.722)

i. With advent of digital tech, Copyright Office added amendments (DMCA) that made copying of music for personal use not infringement but added royalties that were paid to music industry. Copying off the internet was NOT included in these amendments.

ii. Napster operated off a central server where everyone’s files got listed and you could choose from numerous files – almost all copyrighted music.

iii. Court holds NO fair use

iv. This is commercial not b/c of what users are doing but b/c Napster is making profit off of providing this service (advertisements)

v. Ds claimed it served purpose of space-shifting but Court found that primary use was librarying of music.

vi. This extended Sony ruling to primary use, not just substantial use.

vii. Tainted by fact that Napster was sitting in the middle – use of central server gave them knowledge and control over what was being downloaded.

f. UMG Recordings v. (p.732)

i. created music library but only allowed those people who already owned or bought the music to listen to it on their personal website.

ii. Court holds NO fair use.

iii. had to make a copy itself to put it on the central server and was charging a fee for the service. That was enough for violation.

g. Kelly v. Arriba (Supp p.187) Thumbnail search engine

i. Arriba created new pictorial search engine that would bring up thumbnails of pictures and if you clicked on them, it deep-linked you to that picture and gave you information about it but was framed by Arriba info as well.

ii. Pictures haven’t been totally copied b/c only available in smaller form. Users couldn’t make copies b/c of resolution.

iii. P complained about two different things:

1. Deep-linking allowed users to bypass home page (w/ ads)

2. Advertising related to Arriba’s site and not his.

iv. Court says this IS fair use.

v. Thumbnails only are fair use – deep-linking is not.

vi. This was new inventive way to search – probably wanted to protect that.

h. Los Angeles Times v. Free Republic (p.740)

i. Free Republic posted complete copies of news articles from LA Times and then had users comment.

ii. Commentary and criticism are traditional fair uses.

iii. P claims three loses:

1. Archive market

2. Licensing market

3. Advertising market – from fewer hits.

iv. But court holds NO fair use.

v. Most commentary was on facts so users could have summarized

vi. Some of the articles that were copied were archived so depriving copyright owners of market – could just link to the article and then users would have to pay.

vii. Also problem that users would copy it off the Free Republic site and then copying would proliferate.

i. Courts have a lot of problems applying fair use to new technologies especially when they are just for private use.

j. Courts will often look at social usefulness of the use – this isn’t a deciding factor but can explain how some of the cases come out.

Federal Preemption of State Law

I. Supremacy Clause Preemption

a. General Questions :

i. Does the copyright clause a way of limiting Congress’s power as well as giving power? I.e. Congress can only act w/r/t copyrights and patents but states can cover much more IP?

ii. Ex: Does Feist mean that Congress cannot give copyright in facts (b/c of originality) but that states may?

iii. If the federal govt can’t do it, can the states? Or are they preempted?

b. Several kinds of constitutional preemption:

i. Field preemption

1. Congress or the text of the Constitution has fully occupied an area and left no room for states to make any laws

2. Rare to find statutorily but sometimes under Constitutino

ii. Express preemption

1. Congress has expressly said that states can’t do something

iii. Implied preemption

1. Asking whether or not a state scheme/law defeats some federal objective (kind of like DCC)

c. Intellectual Property Protection Outside of Copyright, Patents and Trademarks:

i. Misappropriation

ii. Publicity Rights

1. economic rights that people have in the use of their persona (image, voice, signature, name, etc. – very broad right)

iii. Trade secrecy

1. Allows you to exploit a product while still protecting it (b/c w/ patents you have to divulge what it is)

iv. Unfair trade practices (passing off, etc.)

v. Defamation (like misattribution/moral rights)

d. States all have various forms of these laws. They are not necessarily preempted by Constitution b/c they are outside of the clause

e. Int’l News Service v. Associated Press (p.871) Misappropriation

i. INS was prevented from sending news copy from the European front during WWI. AP’s wire service was publicly available. INS took facts from AP stories and rewrote them and sent out to own newspapers.

ii. SC said this was tortious

iii. Didn’t say there was property right in the news (fact) but INS had misappropriated the information from them.

iv. Using “hot news” during time that it is marketable

f. Sears, Roebuck & Co. v. Stiffel and Compco Corp. v. Day-Brite Lighting (p.851)

i. Both cases involved lighting fixtures that were not eligible for patents

ii. SC said that state unfair trade practices were preempted

iii. State cannot protect something that patents would not

iv. Federal patent law expressed policy of only giving monopoly rights to things that met requirements of patentability

v. State cannot protect b/c then it would undermine patent – cannot protect unpatentable useful objects

vi. Public domain is part of the patent policy – states cannot remove things from the public domain

g. Goldstein v. California (p.850)

i. Copyright didn’t protect sound recordings at this time but CA did.

ii. Court says CA law is not inconsistent, states can protect

iii. States have freedom to promote inventiveness

h. Kewanee Oil v. Bicron Corp. (p.853)

i. Trade secrets are not preempted b/c unlike in patents, you don’t have to disclose to the public

ii. It promotes the same ends as the other laws, creativity, productivity, etc.

iii. State can give protection to your decision not to reveal, but the protection is not as comprehensive as patent (doesn’t prevent others from developing same thing independently).

iv. Courts seem to go back and forth on this preemption issue

i. Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (p.855)

i. Florida law prevented competitors from molding boats – creating casts to make same kind of hull. Under the statute you could make a copy, just not by this casting method. Just trying to cut out cheapest way to copy.

ii. SC says Florida cannot make it more expensive to compete so their statute is preempted

iii. Congress then enacts the same kind of law – protects vessel hulls.

II. Section 301 Preemption

a. Courts are generally more willing to find statutory preemption than constitutional preemption

b. §301 basic provisions:

i. States can’t regulate w/i subject area of copyright

ii. Can’t provide the same rights or limit the rights given in §106

c. This has caused a lot of confusion though

d. Three basic areas of state law that are relevant:

i. Publicity rights

ii. Misappropriation

iii. Contract Law

e. Publicity

i. Most states generally protect right in persona (both celebrities and regular people). So you can protect against unconsented use of identity

ii. Baltimore Orioles v. Major League Baseball Players Ass’n (p.865)

1. Players said that telecasts of the games misappropriated their rights in the athletic performance.

2. Court said telecasts of games were copyrightable (b/c of camera angles, types of shots, use of instant replays, etc.)

3. B/c their performance was “fixed” in a telecast, it falls under §301 and so any state publicity rights are preempted b/c similar to copyright

4. The publicity right in this case was the equivalent of §106(4).

iii. Toney v. L’Oreal (Supp p.259)

1. Toney, a model, claimed that D continued to use photos of her after license was up. This is a typical case where models try to prevent people from using just one photo over and over, want to get paid to take another photo.

2. Court found that her “identity” was not fixed in a tangible medium, a persona cannot be fixed and does not have an author

3. According, the publicity rights offered by state are not equivalent.

4. But in some sense, her “identity” has merged w/ the copyright. D owns the copyright but P is preventing them from using it.

iv. Trend more recently is to look at publicity rights as separate from copyright

v. But this brings up question of public domain – if we take the public domain seriously, why are we allowing states to regulate in areas that Congress does not?

f. Misappropriation

i. NBA v. Motorola (p.869)

1. NBA claimed it had a proprietary interest in real-time basketball information, relying on INS case.

2. District court held that state misappropriation law was not preempted b/c copyright only covered the broadcast.

3. 2nd cir overrules. If district court ruling stands, then you are protecting things clearly w/i the public domain – Facts

4. Court was careful to protect “hot news” exception but unclear whether INS would stand today. Really more sui generis.

g. Contract

i. ProCD v. Zeidenberg (p.880)

1. D took completely uncopyrightable elements (facts) from phonebook. Seems like this would be fine under Feist. But shrinkwrap license prohibited.

2. This was the “extra” element that allowed it to not be preempted

3. Ks are different b/c they contain an extra element.

4. K is not equivalent to copyright – it is highly individualized

ii. Wrench v. Taco Bell (p.887)

1. Equivalency exists if the right defined by state law may be abridged by an act which in and of itself would infringe of the exclusive rights of copyright.

2. K not preempted.

Enforcement: Joint Liability Theories and DMCA

I. Remedies – Chapter 5 of Statute

a. §501 – you can be liable for infringing any §106 right

i. no state of mind requirement

ii. essentially SL

b. Variety of remedies – see notes for more details:

i. §502 – injunctive relief

ii. §503 – right to destroy infringing work

iii. §504 – monetary damages

1. actual damages/lost profit or

2. statutory damages (much more common since lost profits are hard to show, and can be VERY steep – per infringement).

a. Courts have lots of discretion

b. Statutory damages can be very low or very high.

c. NO punitive damages

iv. §505 – court has option of awarding attorney’s fees

v. §506 – criminal sanctions

c. What about third parties who are not direct infringers?

II. Individual and Contributory Infringement

a. Usually applied to employers – typically get vicarious liability

b. Vicarious liability –

i. 3 elements:

1. Knowledge of infringing activity

2. Opportunity/right to control

3. Economic advantage from the infringing

ii. Napster was argued as a vicarious liability case. Court finds Napster liable on both theories of vicarious and contributory liability.

c. Contributory liability

i. When you provide the means for infringement.

ii. Sony was argued on contributory theory but court held that “as long as the manufacturer has no more than general awareness that product can be used to infringe, AND the device has capability for substantial non-infringing use, manufacturer cannot be held contributorily liable.”

iii. Copyright generally does not deal w/ this kind of liability.

d. Metro-Goldwyn-Mayer v. Grokster (Supp p.194)

i. Grokster and Streamcast got rid of central server – so they didn’t have specific knowledge and opportunity to control. But they did specifically target Napster’s old customers and specifically advertised use for downloading copyrighted music.

ii. Court holds liable. Inducement as alternate theory.

iii. Grokster was inducing infringement.

- see notes through end of class

III. DMCA: Protection Against Circumvention

................
................

In order to avoid copyright disputes, this page is only a partial summary.

Google Online Preview   Download